The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Perfect Privacy, LLC /Prof. Diwakar Vaish, AgVa Healthcare, India, represented by Prakash K Prakash, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 25, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2021. The Center received several informal emails from a firm of accountants representing the Respondent. These are discussed below. A Response (not timely) was filed on November 30 2021. See discussion below as to the timing and admissibility of this Response.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 12, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 10, 2022 the Panel issued a procedural order (the “Procedural Order”) the substantive parts of which provided as follows:
“Background
The Panel has reviewed the case file. The Panel notes that although representatives for the Respondent indicated an intention to file a Response no Response has been filed.
Panel Research
In accordance with the position noted in paragraph 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the Panel has performed limited factual research to assist it in determining whether or not the Respondent’s registration of the Disputed Domain Name was made in bad faith. The details and results of that research are as follows:
The Panel has reviewed the website linked to the Disputed Domain Name. That website appears to indicate the Respondent is a bona fide business engaged in the manufacture and sale of a range of low-cost medical ventilators.
Throughout that website the term “Ag Va” is used to refer to the ventilators in question, written as indicated – with a capital A and Capital V, and a lower case g and a, and with a space between the g and the V. That suggests to the Panel the term is an abbreviation of some sort but the Panel was unable to find any indication on the website of what any such abbreviation represented.
However publicly available press articles indicate that the ventilators in question were invented by two individuals – a neurosurgeon Dr Deepak Aggarwal and a robotics scientist Professor Diwakar Vaish (the Respondent) – see for example https://fit.thequint.com/fit/aiims-worlds-cheapest-portable-ventilator#read-more.
That in the Panel’s opinion gives rise to an inference that the term “Ag Va” may be derived from the surnames of the two individuals – Aggarwal and Vaish. If this is the case it would be a relevant factor to be taken into account in the Panel’s reasoning as to whether or not the Respondent had a legitimate interest in the Disputed Domain Name and as to whether or not Disputed Domain Name has been registered and used in bad faith.
Order
In accordance with the general powers of the Panel as provided at paragraph 10 of the UDRP Rules and the procedure identified at paragraph 4.8 of WIPO Overview 3.0, the Panel hereby notifies the parties of the above research which it intends to reference in the course of its Decision and invites either party to make any submissions it considers appropriate in relation to this research (with any supporting evidence if applicable) and as to the inference the Panel has drawn from it.
The Respondent has until Monday January 17, 2022 to lodge any submissions it may wish to make and the Complainant has until Monday January 24, 2022 to lodge any submissions it may wish to make. The Complainant’s submissions may also address anything contained in the Respondent’s submissions.
The Panel’s decision due date is extended until Friday, January 28, 2022. The Panel reserves the right to give further directions if necessary.”
Pursuant to the Procedural Order the Respondent lodged submissions on January 14, 2022 (the “Respondent’s Submissions”). In those Submissions the Respondent said that it had filed a Response on November 30, 2021 and annexed a copy of the material it said had been filed. On January 24, 2022 the Complainant lodged submissions (the “Complainant’s Submissions”). Both of these are discussed below.
4. Factual BackgroundThe following summary sets out various facts (as set out in the Complaint and the Response and the Complainant’s Submissions and the Respondent’s Submissions) which do not appear to be in dispute.
The Complainant is a limited liability company, incorporated in Belgium. Its historical background is in photography and cameras but it has a substantial business in the medical sector as a developer of medical software and medical imaging devices. It is active throughout the world.
The Complainant owns several trademarks for AGFA, including for example European Union Trade Mark Registration no. 003353463 AGFA, registered on January 24, 2005. These are referred to as the AGFA trademark in this decision. It also owns EU registration No. 016044059 for the word and device AGFA HEALTHCARE registered on March 22, 2017. This is referred to as the AGFA HEALTHCARE trademark in this decision.
Corresponding trademarks also exist in India – see for example Indian application No 468766 for the word Agfa and Indian application no 3568809 for the words Agfa Healthcare with device, both of which are registered and subsisting1 .
The Complainant is the registrant of various domain names including the word “agfa” including the domain name
The Complainant operates in India via a subsidiary Agfa Healthcare India Pvt. Ltd. The company has sales and service force employees present in every Indian state. It markets radiology information systems and picture archiving and communications systems. Imaging systems developed and implemented by Agfa Healthcare capture, process, and manage diagnostic images from a multitude of sources (Like X-Ray, CT, MRI, and Ultrasound) within and beyond the healthcare enterprise, integrating these into a variety of workflows and systems. These systems are used within hospitals and other healthcare enterprises for reporting, enterprise scheduling, decision support, and data storage. The Complainant’s turnover in India in 2020 under the Agfa Healthcare brand was approximately 44 million euros. It exhibits at trade shows in India – for example at the AOCR (Asian Oceanian Congress of Radiology), in Mumbai, India, January 25-28, 2018 where the filed evidence shows a substantial team of employees were present.
The Disputed Domain Name was registered on January 27, 2019. The Disputed Domain Name is linked to a website (the “Respondent’s Website”) which promotes a range of medical ventilators that the Respondent manufacture and sells.
5. Parties’ Contentions A. ComplainantThe Complainant says that it has rights in the AGFA trademark and the AGFA HEALTHCARE trademark.
The Complainant contends that the Disputed Domain Name is confusingly similar to its AGFA trademark as if it is constituted entirely of the Complainant’s AGFA mark with the added word “healthcare”. The Complainant further contends that the Disputed Domain Name is identical or confusingly similar to its AGFA HEALTHCARE trademark
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant says that it has not licensed or otherwise authorized the Respondent to use its trademark or to apply for a domain name incorporating its AGFA mark. The Complainant submits that the Complainant has prior and exclusive rights to the names AGFA and AGFA HEALTHCARE.
The Complainant says that the Respondent has registered the Disputed Domain Name in bad faith. The Complainant says that its AGFA trademark and AGFA HEALTHCARE trademark are famous and predate the Disputed Domain Name registration. As a result, the Respondent could not ignore the pre-existence of the Complainant’s trademark rights and the Respondent must have been fully aware of these when selecting the Disputed Domain Name.
The Complainant says it suspects that the Respondent has selected the term AGVA because of its similarity to the Complainant’s reputed trademark AGFA to draw the impression that it is affiliated with the Complainant, or endorsed by it. This is unacceptable for the Claimant, and demonstrates at the same time the Respondent’s bad faith.
B. RespondentAs indicated above the Respondent filed a (late) Response on November 30, 2021. It has provided a further copy of the relevant annexes to the Respondent’s Submissions. In any event the Panel will in the circumstances of this case exercise its discretion to admit the Response which was in any case filed out of time. It does so primarily because it considers it is in the interests of justice to consider everything the Respondent has to say in a case which is it not straightforward.
The points the Respondent makes in the Response and the Respondent’s Submissions are set out with considerable repetition. The essence of the Respondent’s case seems to the Panel to be as follows.
The Respondent says that the proper respondent is a firm M/s AGVA Healthcare which was formed on March 8, 2018 and which is a partnership firm having partners namely Professor Diwakar Vaish and Mrs. Swati Singh (who is the wife of Dr. Deepak Agarwal). It says that firm is engaged in the manufacture and sale of a range of low cost medical ventilators. It says the ventilators in question were invented by two individuals – a neurosurgeon Dr. Deepak Aggarwal and a robotics scientist Professor Diwakar Vaish.
The Respondent says that the Disputed Domain Name was derived from the prefixes of the surnames of co-inventors of the portable ventilator – Agarwal and Vaish – and was chosen without any bad faith or “encroachment upon goodwill/trademark/domain name etc. of somebody else with any malafide intention”.
It says that the Respondent’s Website in the “About” section explains how the term/abbreviation AGVA was derived. It states that “AgVa came into existence with the brainstorming of ideas between the two inventors Dr Deepak Agarwal & Prof Diwakar Vaish. The name of the company resonates the names of the inventors Ag from Dr. Agarwal and Va from Prof Vaish”.
The Panel would observe at this point that it believes this section of the Respondent’s Website was created after the date of the Procedural Order. It was not present on the Respondent’s Website when the Panel inspected it immediately prior to issuing the Procedural Order.
It says that there is no similarity between the Disputed Domain Name and the Complainant’s domain name
The Respondent says it is the honest, bonafide and lawful owner of the trade name / trademark “AgVa Healthcare” and has been using the same since March 9, 2018.
The Respondent says its aim is to provide affordable healthcare for one and all. It says it has acted upon India’s call for “Atmanirbhar Bharat” (self-dependent India) and has invented one of its kind, a portable ventilator and humidifier that can be used at home by patients with ease. In doing so it says it has aided India to fight the insufficiency of ventilators caused by surge of Covid-19 in India in March 2020 and again in months of April-May, 2021. It says in its first year of operation its turnover was 105 crore which equates to approximately 14 million USD.
So far as the two inventors are concerned it says that Dr. (Prof.) Deepak Agarwal is a Senior Surgeon at AIIMS, New Delhi in the field of Neurology and Professor Diwakar Vaish is a Robotics Scientist with over 10 inventions to his name. He is also an Honorary Professor and a guest lecturer to over 14 Indian Institute of Technologies (IIT) of India.
It denies any “alleged trademark” of the Complainant is well-known for manufacturing and trading of “Portable Ventilators” or is an invented word in any manner or forms any part of alleged corporate name of the Complainant.
The Respondent says it has rights or legitimate interests in respect of the Disputed Domain Name. It says that it has been commonly known by the name AgVa or AgVa Healthcare.
The Respondent says that trademark opposition proceedings in relation to the trademark (AGFA & AgVa) are also pending between the Complainant and the Respondent in India. It refers to Opposition No.1125560 to Application No.4939075 in Class-10 as pending between the Complainant and the Respondent in India (see further below).
6. Discussion and FindingsPreliminary Matters
The Panel notes this is a case where one Respondent (Perfect Privacy, LLC) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent of record to be Prof. Diwakar Vaish, AgVa Healthcare – it appears that Professor Vaish is one partner in a firm called AgVa Healthcare and it seems to the Panel that the substantive Respondent is that firm. This is of some relevant in that the Response claims the Respondent is commonly known as AgVa or AgVa Healthcare.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the AGFA trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here “healthcare”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
So far as the AGFA HEALTHCARE trademark is concerned that is a device mark but it features prominently as part of the registered device the words “AGFA HEALTHCARE” and in these circumstances the Panel concludes the Disputed Domain Name is also confusingly similar to this trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp WIPO Case No. D2001-0031. The Disputed Domain Name differs from the words “Agfa Healthcare” by one letter (ignoring the .com generic Top-Level Domain – see below) and is visually and phonetically almost identical.
It is also well established that the generic Top-Level Domain, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the AGFA trademark and the AGFA HEALTHCARE trademarks are, on the evidence before the Panel, terms in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent says that (i) and (ii) above are applicable.
The evidence indicates that the Respondent’s business commenced in or about March 2018 and hence the Panel concludes that the Respondent’s Website and its business in ventilators predates the present complaint. Clearly in these circumstances paragraph 4(c)(i) is potentially applicable. The issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was merely operating a business irrespective of any infringing intent, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The Panel has found resolving this issue to be difficult given the facts of this case. The Respondent’s account is that the term “agva” was derived from the first two letters of each of the two individuals who invented the Respondent’s ventilators. As a matter of fact the first two letters of each of the surnames do form the term “agva”. The explanation therefore appears prima facie credible. However that is not the end of the matter. The name the Respondent selected for its business was “Agva Healthcare” – which is a name very similar indeed to the Complainant’s AGFA HEALTHCARE mark. The filed evidence shows the Complainant has a substantial business throughout the world and more particularly in India under the name AGFA HEALTHCARE. By way of example its turnover in India in 2020 under the Agfa Healthcare brand was approximately 44 million euros. Although that business is not in precisely the same field as that of the Respondent (a point the Respondent has emphasised) it is in a related area in that both the Complainant’s products and the Respondent’s products can be described as medical devices. It seems to the Panel that both of Dr. Agarwal and Professor Vaish are likely to have at least some awareness of the wider field of medical devices (as opposed to just ventilators) and of medical imaging devices in at least general terms. The Panel considers it significant that the Respondent has been completely silent as to whether or not it was aware of the Complainant and/or its Agfa Healthcare brand when it adopted the name Agva Healthcare. If it had an affirmative case that it did not know of Agfa Healthcare the Panel would have expected it to say so. In those circumstances the Panel infers that the Respondent did have this knowledge – indeed given the evidence it would in the Panel’s view be surprising if neither Dr. Agarwal nor Professor Vaish was aware of Agfa Healthcare.
Instead the Panel is left to ponder why the name “agva healthcare” was chosen as opposed to, for example “agva ventilators”. The Panel is left with the impression that the term “agva” may well have been derived from the two individuals surnames but the combination of that term with the word “healthcare” was more likely than not opportunistically chosen to provide a further benefit of implicitly suggesting some sort of connection with the Complainant – and may have even been a factor that drove the adoption of the “agva” term (merely to illustrate the point, the first two letters of the surnames could have been adopted in the opposite order, the first names could have been used, etc.). That in the Panel’s opinion is not bona fide so far as paragraph 4(c)(i) is concerned.
In reaching this conclusion the Panel has also had in mind the evidence that has been filed about trademark opposition proceedings between the parties in India. The Respondent says that trademark opposition proceedings under Opposition No.1125560 to Application No.4939075 in Class10 are pending between the Complainant and the Respondent in India. This is an opposition by the Complainant to the Respondent’s application for “AgVa AV AD200” as a trademark. This application was advertised in the Indian Trade Marks journal on May 31, 2021 and the grounds of opposition were dated September 30, 2021. These proceedings are currently pending. The Panel does not consider that this application and opposition significantly affects its analysis. Of more significance however is an earlier opposition which the Complainant has placed in evidence pursuant to the Procedural Order and which the Respondent did not mention. This was an opposition by the Complainant to Indian trademark application no. 3947561 in Class 10 by Professor Vaish for the word mark “AgVa Healthcare” which was advertised in the Indian Trade Mark Journal on October 22, 2018. The Opposition was filed on January 25, 2019. It is not clear to the Panel precisely when he Complainant will have become aware of this opposition. In any event Professor Vaish did not file any counter statement to the Complainant’s statement of opposition and as a result on September 25, 2019 the application was deemed abandoned and an order to that effect was issued. The Complainant says that this opposition supports its argument that the Disputed Domain Name was registered and used in bad faith. The Panel is not sure that is correct at least in relation to registration, as the opposition was filed only two days before the date the Disputed Domain Name was registered and it is not clear the Respondent will have known about it by that date. It does however seem significant to the Panel that Professor Vaish was not, when challenged, prepared to defend his application for a trademark for the term “Agva Healthcare”. That suggests to the Panel that its conclusions as to this combined term (see above) are more likely than not correct.
So far as paragraph 4(c)(ii) is concerned that requires the Respondent to show, by credible evidence, that it is commonly known as “agva healthcare”. Establishing that the Respondent is “commonly known” by that name requires evidence to that effect and none has been provided. However, given that the relevant legal entity appears to be a partnership named AgVa Healthcare it does seem likely that the Respondent would be known by that name. However, more fundamentally the Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant’s fame and reputation, can then take advantage of an “own name” provision to justify its actions. The right to use one’s own name is not unlimited and cannot be used to circumvent well-known prior rights in a similar name – see for example Peter Frampton vs. Frampton Enterprises, Inc.,WIPO Case No. D2002-0141:
“While the Panel recognizes that any individual has a right to use his(her) name in connection with a business, that right is not unfettered; instead, it is circumscribed by the prior trademark rights of others who use that name in connection with specific goods and services, as is certainly the case here.”
For the reasons discussed above the Panel concludes that the name “agva healthcare” was chosen as importing a deliberate reference to the Complainant’s “AGFA HEALTHCARE” brand and hence the Panel agrees with the approach in D2002-0141 in the circumstances of the present case. The Panel therefore does not consider that the Respondent is entitled to claim a right or legitimate interest in the Disputed Domain Name.
Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithThe Panel concludes that it is more likely than not that the Respondent chose to register a name that was very similar indeed to the Complainant’s trademark and that it did so deliberately. The Respondent’s use of “agva healthcare” differs from the Complainant’s use of “AGFA HEALTHCARE” by just one letter and results in a name which is almost identical phonetically. It may well have though this was a clever play on words in taking the initial letters of the two individuals concerned and combining these with the word “healthcare” but for the reasons discussed above the Panel concludes this seems nevertheless to have been deliberately done by importing a reference to the Complainant’s AGFA HEALTHCARE trademark.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances the Panel concludes that factor (iv) applies. The effect of importing the reference to the AGFA HEALTHCARE brand is to incorrectly suggest some sort of connection with that brand and as a result to gain commercial advantage as a result.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled
In reaching this conclusion the Panel wishes to make clear that it has no doubt on the evidence that the Respondent is engaged in a business producing extremely useful products of particular benefit to India especially in the light of the current Covid pandemic. This conclusion relates solely to its choice of the term “agvahealthcare” as the operative part of the Disputed Domain Name.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name
Nick J. Gardner
Sole Panelist
Date: February 3, 2022
1 Details of these trademarks were not contained in the filed evidence but the Panel has confirmed as a matter of public record that they exist.